Germany: Business bases opposition against trade mark on company name

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19 October 2018

In a decision handed down on January 16 2018, the German
Federal Patent Court confirmed that an opposition against a
trade mark can be based on a company name (28 W (pat) 7/16 -
eberth/EBERTH).

In 2013, the applicant filed for registration of the device
mark EBERTH claiming protection for machines in Class 7. An
opposition against this trade mark was filed based on the
opponent's company name Eberth. As evidence for the existence
of this right, the opponent submitted a business letter from
the year 1990, an offer letter from 1992, an order confirmation
from 2007 as well as invoices from 2005 to 2015, all referring
to either eberth group, www.eberth.com and/or eberth MASCHINEN-
UND ANLAGENBAU. The Court found that these documents were
suitable to evidence the use and therefore existence of the
prior company name eberth in Germany in connection with the
production and sale of transportation and packaging apparatus
and installations before the application date of the contested
mark. The Court therefore upheld the opposition. The Court
confirmed that rights to a company name may not only be invoked
against another company name but also against use (and
registration) of a sign as trade mark, because a trade mark
designates the commercial origin of a product of a specific
undertaking and therefore, indirectly, also designates the
company behind the product.

This decision is in line with the German Trade Mark Act and
recent case law. It is therefore not surprising, but it does
emphasise the importance of rights for a company name or other
business names. Such rights are often ignored or considered to
be of minor effectiveness. For example, unlike a national
German trade mark, a company name is not automatically
protected in the whole territory of the Federal Republic of
Germany. Also, rather than simply referring to a registered
list of goods and services of a trade mark, it may be more
difficult to provide evidence for exactly which goods and
services a company name has been used. However, if done
correctly, such rights to a company name can be a very
effective way of enforcing a company's rights against third
parties. For example, the required level of distinctiveness for
a company name is lower than that required for a trade mark.
Also, single elements of a company name like eberth may be
protected even when embedded in a longer name like eberth
MASCHINEN- UND ANLAGENBAU. Thus, where appropriate, owners of a
company name may wish to consider the possibility of enforcing
such rights against third parties, even where trade marks are
concerned, rather than other company name rights.